What is Intellectual Property?

Intellectual property refers to creations of the mind, such as inventions, literary and artistic works, designs, symbols, and names and images used in commerce.
It is categorized in
(a) Industrial Property which includes patents for inventions, trademarks, industrial designs and geographical indications, and
(b) Copyright which covers literary works (such as novels, poems and plays), films, music, artistic works (e.g., drawings, paintings, photographs, and sculptures), and architectural design.

Intelectual Property Services

  • Trademark searches and registration
  • Patent searches and registration
  • Copyright protection

Additional Services

  • Independent Legal Advice
  • Legal advice on all agreements

Frequently Asked Questions

Copyright

Copyright laws grant authors, artists, and other creators protection for their literary and artistic creations, generally referred to as “works”. A closely associated field is “related rights”, or rights related to copyright that encompass rights similar or identical to those of copyright, although sometimes more limited and of shorter duration. The beneficiaries of related rights are: (a) performers (such as actors and musicians) in their performances; (b) producers of phonograms (for example, compact discs) in their sound recordings; and (c) broadcasting organizations in their radio and television programs.
Works covered by copyright include, but are not limited to: novels, poems, plays, reference works, newspapers, advertisements, computer programs, databases, films, musical compositions, choreography, paintings, drawings, photographs, sculpture, architecture, maps, and technical drawings.

The creators of works protected by copyright, and their heirs and successors (generally referred to as “right holders”), have certain basic rights under copyright law. They hold the exclusive right to use or authorize others to use the work on agreed terms. The right holder(s) of a work can authorize or prohibit: its reproduction in all forms, including print form and sound recording; its public performance and communication to the public; its broadcasting; its translation into other languages; and its adaptation, such as from a novel to a screenplay for a film. Similar rights of, among others, fixation (recording) and reproduction are granted under related rights. Many types of works protected under the laws of copyright and related rights require mass distribution, communication and financial investment for their successful dissemination (for example, publications, sound recordings and films). Hence, creators often transfer these rights to companies better able to develop and market the works, in return for compensation in the form of payments and/or royalties (compensation based on a percentage of revenues generated by the work). The economic rights relating to copyright are of limited duration – as provided for in the relevant WIPO treaties – beginning with the creation and fixation of the work, and lasting for not less than 50 years after the creator’s death. National laws may establish longer terms of protection. This term of protection enables both creators and their heirs and successors to benefit financially for a reasonable period of time. Related rights enjoy shorter terms, normally 50 years after the performance, recording or broadcast has taken place. Copyright and the protection of performers also include moral rights, meaning the right to claim authorship of a work, and the right to oppose changes to the work that could harm the creator’s reputation. Rights provided for under copyright and related rights laws can be enforced by right holders through a variety of methods and fora, including civil action suits, administrative remedies and criminal prosecution. Injunctions, orders requiring destruction of infringing items, inspection orders, among others, are used to enforce these rights.

Copyright and related rights protection is an essential component in fostering human creativity and innovation. Giving authors, artists, and creators incentives in the form of recognition and fair economic reward increases their activity and output and can also enhance the results. By ensuring the existence and enforceability of rights, individuals and companies can more easily invest in the creation, development and global dissemination of their works. This, in turn, helps to increase access to and enhance the enjoyment of culture, knowledge, and entertainment the world over, and also stimulates economic and social development.

The field of copyright and related rights has expanded enormously during the last several decades with the spectacular progress of technological development that has, in turn, yielded new ways of disseminating creations by such forms of communication as satellite broadcasting, compact discs, and DVDs. Widespread dissemination of works via the Internet raises difficult questions concerning copyright and related rights in this global medium. World Intellectual Property Organization (WIPO) is fully involved in the ongoing international debate to shape new standards for copyright protection in cyberspace. In that regard, the organization administers the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT), known as the “Internet Treaties”. These treaties clarify international norms aimed at preventing unauthorized access to and use of creative works on the Internet.

Copyright and related rights protection is obtained automatically without the need for registration or other formalities. However, many countries provide for a national system of optional registration and deposit of works. These systems facilitate, for example, questions involving disputes over ownership or creation, financial transactions, sales, assignments, and transfer of rights. Many authors and performers do not have the ability or means to pursue the legal and administrative enforcement of their copyright and related rights, especially given the increasingly global use of literary, music, and performance rights. As a result, the establishment and enhancement of collective management organizations (CMOs), or “societies”, is a growing and necessary trend in many countries. These societies can provide their members with efficient administrative support and legal expertise in, for example, collecting, managing, and disbursing royalties gained from the national and international use of a work or performance. Certain rights of producers of sound recordings and broadcasting organizations are sometimes managed collectively as well.

Geographical Indications

A geographical indication is a sign used on goods that have a specific geographical origin and possess qualities or a reputation due to that place of origin. Most commonly, a geographical indication consists of the name of the place of origin of the goods. Agricultural products typically have qualities that derive from their place of production and are influenced by specific local geographical factors, such as climate and soil. Whether a sign functions as a geographical indication is a matter of national law and consumer perception. Geographical indications may be used for a wide variety of agricultural products, such as, for example, “Tuscany” for olive oil produced in a specific area of Italy, or “Roquefort” for cheese produced in that region of France. The use of geographical indications is not limited to agricultural products. They may also highlight specific qualities of a product that are due to human factors found in the product’s place of origin, such as specific manufacturing skills and traditions. The place of origin may be a village or town, a region or a country. An example of the latter is “Switzerland” or “Swiss”, perceived as a geographical indication in many countries for products made in Switzerland and, in particular, for watches.

An appellation of origin is a special kind of geographical indication used on products that have a specific quality exclusively or essentially due to the
geographical environment in which the products are produced. The term geographical indication encompasses appellations of origin. Examples of appellations
of origin that are protected in states party to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration are
“Bordeaux” for wine produced in the Bordeaux region of France, “Prosciutto di Parma” – or Parma ham – for ham produced in the Parma province of Italy or “Habana” for tobacco grown in the Havana region of Cuba

Geographical indications are understood by consumers to denote the origin and quality of products. Many of them have acquired valuable reputations which, if not adequately protected, may be misrepresented by commercial operators. False use of geographical indications by unauthorized parties, for example “Darjeeling” for tea that was not grown in the tea gardens of Darjeeling, is detrimental to consumers and legitimate producers. The former are deceived into believing they are buying a genuine product with specific qualities and characteristics, and the latter are deprived of valuable business and suffer damage to the established reputation of their products.

A trademark is a sign used by a company to distinguish its goods and services from those produced by others. It gives its owner the right to prevent others from using the trademark. A geographical indication guarantees to consumers that a product was produced in a certain place and has certain characteristics that are due to that
place of production. It may be used by all producers who make products that share certain qualities in the place designated by a geographical indication.

If the name of a place is used to designate a particular type of product, rather than to indicate its place of origin, the term no longer functions as a geographical indication. For example, “Dijon mustard”, a kind of mustard that originated many years ago in the French town of Dijon, has, over time, come to denote mustard of that kind made in many places. Hence, “Dijon mustard” is now a generic indication and refers to a type of product, rather than a place.

Geographical indications are protected in accordance with national laws and under a wide range of concepts, such as laws against unfair competition, consumer protection laws, laws for the protection of certification marks or special laws for the protection of geographical indications or appellations of origin. In essence, unauthorized parties may not use geographical indications if such use is likely to mislead the public as to the true origin of the product. Applicable sanctions range from court injunctions preventing unauthorized use to the payment of damages and fines or, in serious cases, imprisonment.

Industrial Design

An industrial design refers to the ornamental or aesthetic aspects of an article. A design may consist of three-dimensional features, such as the shape or surface of an article, or two-dimensional features, such as patterns, lines or color. Industrial designs are applied to a wide variety of industrial products and handicrafts: from technical and medical instruments to watches, jewelry and other luxury items; from house wares and electrical appliances to vehicles and architectural structures; from textile designs to leisure goods. To be protected under most national laws, an industrial design must be new or original and non-functional. This means that an industrial design is primarily of an aesthetic nature, and any technical features of the article to which it is applied are not protected by the design registration. However, those features could be protected by a patent.

Industrial designs are what make an article attractive and appealing; hence, they add to the commercial value of a product and increase
its marketability. When an industrial design is protected, the owner – the person or entity that has registered the design – is assured an exclusive
right and protection against unauthorized copying or imitation of the design by third parties. This helps to ensure a fair return on investment. An effective
system of protection also benefits consumers and the public at large, by promoting fair competition and honest trade practices, encouraging creativity and promoting more aesthetically pleasing products. Protecting industrial designs helps to promote economic development by encouraging creativity in the industrial and manufacturing
sectors, as well as in traditional arts and crafts. Designs contribute to the expansion of commercial activity and the export of
national products. Industrial designs can be relatively simple and inexpensive to develop and protect. They are reasonably accessible to small and medium-sized enterprises as well as to individual artists and craftsmakers, in both developed and developing countries.

Generally, industrial design protection is limited to the country in which protection is granted. The Hague Agreement Concerning the International Registration
of Industrial Designs, a WIPO administered treaty, offers a procedure for international registration of designs. Applicants can file a single international
application either with WIPO or the national or regional office of a country party to the treaty. The design will then be protected in as many member countries of the
treaty as the applicant designates.

Intellectual Property

It is our practice to perform a search of the Canadian Trademark Office’s database in order to ascertain the availability of your mark. In addition, it may be prudent to search unregistered trademarks such as trade names, which may have common-law rights. The cost of the search is often far less than the cost associated with changing the mark later if it is determined that there is a prior user. After determining that the goods and/or services you intend to provide in association with the proposed mark, we will perform the search, analyze the results and report to you.

If the search does not reveal any marks that may have an effect on the registration of your mark, the next step is to file a trademark application. This stage involves the preparation of the application based on a consideration of the goods and services to be used in association of the mark. The application is submitted to the Trademarks Office along with the appropriate government filing fee.

Once a trademark application is filed it must be reviewed by a Trademark Office Examiner who typically issues one or more Office Actions (objections) to which we must respond. In Canada a first Office Action is typically issued 6 to 8 months after the initial filing date.

If and when the Examiner’s objections are dealt with, the application will be advertised in the Trademarks Journal, a weekly publication issued by the Trademarks Office listing new trademark applications. This allows any member of the public an opportunity to oppose or object to the application. In Canada the opposition period is two months from the date of publication.

After advertisement without objections, a Notice of Allowance will be issued. The applicant will be required to submit the registration fee and, if the mark is based on prior, a Declaration of Use.

Following satisfaction of the requirements for registration, including payment of the registration fee, the application becomes a “registered trademark” and is so recorded in the Trademark Office database. A trademark can be registered indefinitely, provided there is continued use of the mark, however, the registration must be renewed every fifteen years.

A trademark is a word or design used by a business to distinguish its goods or services from those of competitors.
There are two types of trademarks. Word marks are words, letters, numbers or combinations of them. Design marks are words written in a special style such as the Coca-Cola design, pure designs without words such as the Mercedes-Benz star, or a combination of words and designs.

The first step is to choose a suitable word or design to identify the goods or services. Trademark rights to the word or design are acquired by applying to register the trademark or by commencing use of the trademark. Unlike corporate names, it is not possible to reserve a trademark. There is always some risk that someone else will claim prior rights to a trademark after an application is filed or after use has started.

The Trademarks Office will not register a trademark which is confusing with a registered trademark or with a trademark in another application having priority. The application with the earliest date, either the filing date or the date of first use, has priority. Use of a trademark confusing with a registered mark may make the user liable for damages if legal action is taken for trademark infringement.
In addition, if registration of a trademark is desired, it must not be clearly descriptive of the goods or services it identifies. An example of a clearly descriptive mark is SUPERWASH to identify woolen goods. On the other hand, trademarks may be registered if they are merely suggestive of the goods and services. An example is WATER WOOL for woolen goods. The assistance of an experienced trademark agent is usually needed to decide whether a mark is clearly descriptive or not.
A trademark normally cannot be registered if it is nothing more than a surname. An example is JONES to identify wine. However ELDERS may be registered for wine because, while it is a surname, it has another meaning.
Clearly descriptive trademarks or surnames may be registered after a period of extensive use. An example is the trademark MCDONALDS.
There are other marks which cannot be registered, such as the name of the goods or services in any language, various flags, coats of arms and marks confusing with marks adopted by public authorities. A trademark agent should therefore be consulted before deciding on a mark.

The strength of a trademark is related to a factor called “distinctiveness”. A trademark is not very distinctive, and is therefore a weak one, if it is descriptive of the goods or services, a surname, initials or constitutes words commonly used in conjunction with the goods or services. Adopting unconventional spelling of words usually doesn’t help. Such marks make little impact on the mind of the consumer and therefore do not adequately direct him or her to goods or services of one person rather than competitors. However, such marks can become distinctive, and therefore valuable, by extensive use and advertising.
The most distinctive type of trademark is an arbitrary word without meaning such as KODAK. Such trademarks become strongest after extensive usage. Use of such marks by others on any goods or services likely would be trademark infringement.
However, many trademark owners do not like arbitrary or meaningless words because they initially create no favourable impression in the mind of the consumer. This may be very important from a marketing point of view, at least until a mark becomes well known. For this reason, the best compromise is usually a trademark which suggests some favourable characteristic of the product or service but does not clearly describe it.

The best way to try to avoid conflicts with earlier trademarks is to have a trademark search done. An experienced registered trademark agent can offer preliminary advice before doing the search. It may be advisable to have a few alternative trademarks ready.
After the search is done, the agent gives an opinion as to whether or not the trademark appears to be available for registration. It may take considerable experience to decide whether a trademark is confusing with one found in the search, particularly if the marks are similar and their goods or services are also similar. Search results are not completely reliable though. There is some risk that conflicts with other marks will be found later.
To start a search, the agent needs to know the trademark itself and the goods and/or services the mark identifies or will identify.

An application is filed by the Trademark Agent with the Canadian Trademarks Office. There are no provincial trademark registrations in Canada. People sometimes speak of registering their name in Victoria. This refers to trade names or business names and not to trademarks. Registration in Victoria confers no right to use the name as a trademark. Federal trademark laws take priority.
After the application is filed, the Trademarks Office sends a filing notice which merely acknowledges receipt of the application and gives a filing date and an application number.
A few months later, the application is reviewed by an Examiner at the Trademarks Office who conducts another search to see if there other confusing marks. If a confusing trademark is not found, and there are no other objections, such as descriptiveness or that the mark is a surname, then the trademark is approved for advertisement in the Trademarks Journal. If objections are made, then the Examiner sends an Examiner’s Report listing objections to registration. A period of time, usually six months, is given to respond. Often an experienced trademark agent can overcome objections by presenting arguments in favour of registration of the trademark.
The Trademarks Journal is published by the Trademarks Office and lists trademarks which the Office proposes registering. Other parties then have the opportunity to oppose the registration of the published marks, usually on the grounds of prior use or registration of a similar trademark.
If an opposition is filed, which occurs in only a small percentage of cases, the matter is decided by opposition proceedings. These are generally similar to a trial but are conducted mainly by written submissions and are much less expensive.
If no opposition is filed, then the trademark application is allowed. If the trademark was already in use at the time the application was filed, then the only remaining step is paying the registration fee. If the trademark was not in use at the time the application was filed, then it is also necessary to file a declaration stating that use of the trademark has started.

An application may be filed either before or after use of a trademark starts. An application takes a minimum of one year to be approved and so trademark owners should file applications for proposed trademarks, or a few alternatives, a year or more before they plan on using the marks. Often such advanced planning is not possible, and the trademark owner then may have to change the mark if problems develop, particularly conflicts with other trademarks.

A trademark is used on goods when the mark appears on the goods, or packaging or labeling for the goods, and the goods are sold in the normal course of trade. A trademark is not used on goods when it appears in advertisements for the goods or if the sale of the goods is an isolated one or if they are distributed free.
A trademark is used on services, for example restaurants, retail stores, construction contractors or musical bands, when the mark appears in advertisements or promotional material for the services and such services are actually available at that time.

Generally a separate trademark application is required in each country where protection is desired.
Canadian trademark owners should seriously consider registration of their trademarks in the United States. Otherwise, later expansion into the United States may be prohibited, or a change of trademark required, if the mark is later found to be unavailable there.
If registration in the United States is essential or desirable, then it may be advisable to do a U.S. trademark search before a Canadian search. It is generally more difficult to find an available trademark in the United States.
If the trademark appears to be available in the United States and Canada, then a Canadian application should be filed first. The United States application may be filed up to six months after the Canadian application and will get the filing date of the Canadian application. No use of the trademark in the United States is required to obtain registration if this procedure is followed.
Applications in other foreign countries should also be filed within six months of filing the Canadian application. They also get the filing date of the Canadian application under the International Convention.

Your mark, or setup of your business including your name, logos, and colours, are the heart of your business and may become very valuable and desirable over time. Protecting your rights against competing businesses is important. Although your business has rights to its mark through the workings of common-law trademarks in the geographical area where it is made known, it is not protected elsewhere. Only registration of your mark as a Canadian trademark protects it against use by others absolutely.

A patent is an exclusive right granted for an invention – a product or process that provides a new way of doing something, or that offers a new technical solution to a problem. A patent provides patent owners with protection for their inventions. Protection is granted for a limited period, generally 20 years.

Patent protection means an invention cannot be commercially made, used, distributed or sold without the patent owner’s consent. Patent rights are usually enforced in courts that, in most systems, hold the authority to stop patent infringement. Conversely, a court can also declare a patent invalid upon a successful challenge by a third party

A patent owner has the right to decide who may – or may not – use the patented invention for the period during which it is protected. Patent owners may give permission to, or license, other parties to use their inventions on mutually agreed terms. Owners may also sell their invention rights to someone else, who then becomes the new owner of the patent. Once a patent expires, protection ends and the invention enters the public domain. This is also known as becoming off patent, meaning the owner no longer holds exclusive rights to the invention, and it becomes available for commercial exploitation by others.

The first step in securing a patent is to file a patent application. The application generally contains the title of the invention, as well as an indication of its technical field. It must include the background and a description of the invention, in clear language and enough detail that an individual with an average understanding of the field could use or reproduce the invention. Such descriptions are usually accompanied by visual materials – drawings, plans or diagrams – that describe the invention in greater detail. The application also contains various “claims”, that is, information to help determine the extent of protection to be granted by the patent.

An invention must, in general, fulfill the following conditions to be protected by a patent. It must be of practical use; it must show an element of “novelty”, meaning some new characteristic that is not part of the body of existing knowledge in its particular technical field. That body of existing knowledge is called “prior art”. The invention must show an “inventive step” that could not be deduced by a person with average knowledge of the technical field. Its subject matter must be accepted as “patentable” under law. In many countries, scientific theories, mathematical methods, plant or animal varieties, discoveries of natural substances, commercial methods or methods of medical treatment (as opposed to medical products) are not generally patentable.

Patents are granted by national patent offices or by regional offices that carry out examination work for a group of countries – for example, the European Patent Office (EPO) and the African Intellectual Property Organization (OAPI). Under such regional systems, an applicant requests protection for an invention in one or more countries, and each country decides whether to offer patent protection within its borders. The WIPO-administered Patent Cooperation Treaty (PCT) provides for the filing of a single international patent application that has the same effect as national applications filed in the designated countries. An applicant seeking protection may file one application and request protection in as many signatory states as needed.

A trademark is a distinctive sign that identifies certain goods or services produced or provided by an individual or a company. Its origin dates back to ancient times when craftsmen reproduced their signatures, or “marks”, on their artistic works or products of a functional or practical nature. Over the years, these marks have evolved into today’s system of trademark registration and protection. The system helps consumers to identify and purchase a product or service based on whether its specific characteristics and quality – as indicated by its unique trademark – meet their needs.

Trademark protection ensures that the owners of marks have the exclusive right to use them to identify goods or services, or to authorize others to use them in return for payment. The period of protection varies, but a trademark can be renewed indefinitely upon payment of the corresponding fees. Trademark protection is legally enforced by courts that, in most systems, have the authority to stop trademark infringement. In a larger sense, trademarks promote initiative and enterprise worldwide by rewarding their owners with recognition and financial profit. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services. The system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating international trade.

Trademarks may be one or a combination of words, letters and numerals. They may consist of drawings, symbols or three dimensional signs, such as the shape and packaging of goods. In some countries, non-traditional marks may be registered for distinguishing features such as holograms, motion, color and non-visible signs (sound, smell or taste). In addition to identifying the commercial source of goods or services, several other trademark categories also exist. Collective marks are owned by an association whose members use them to indicate products with a certain level of quality and who agree to adhere to specific requirements set by the association. Such associations might represent, for example, accountants, engineers or architects. Certification marks are given for compliance with defined standards but are not confined to any membership.They may be granted to anyone who can certify that their products meet certain established standards. Some examples of recognized certification are the internationally accepted “ISO 9000” quality standards and Ecolabels for products with reduced environmental impact

First, an application for registration of a trademark must be filed with the appropriate national or regional trademark office. The application must contain a clear reproduction of the sign filed for registration, including any colors, forms or three-dimensional features. It must also contain a list of the goods or services to which the sign would apply. The sign must fulfill certain conditions in order to be protected as a trademark or other type of mark. It must be distinctive, so that consumers can distinguish it from trademarks identifying other products, as well as identify a particular product with it. It must neither mislead nor deceive customers nor violate public order or morality. Finally, the rights applied for cannot be the same as, or similar to, rights already granted to another trademark owner. This may be determined through search and examination by national offices, or by the opposition of third parties who claim to have similar or identical rights.

Almost all countries in the world register and protect trademarks. Each national or regional office maintains a Register of Trademarks containing full application information on all registrations and renewals, which facilitates examination, search and potential opposition by third parties. The effects of the registration are, however, limited to the country (or, in the case of regional registration, countries) concerned. To avoid the need to register separate applications with each national or regional office, WIPO administers an international registration system for trademarks. The system is governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol. Persons with a link (be it through nationality, domicile or establishment) to a country party to one or both of these treaties may, on the basis of a registration or application with the trademark office of that country (or related region), obtain an international registration having effect in some or all of the other countries of the Madrid Union.

An industrial design refers to the ornamental or aesthetic aspects of an article. A design may consist of three-dimensional features, such as the shape or surface of an article, or two-dimensional features, such as patterns, lines or color. Industrial designs are applied to a wide variety of industrial products and handicrafts: from technical and medical instruments to watches, jewelry and other luxury items; from house wares and electrical appliances to vehicles and architectural structures; from textile designs to leisure goods. To be protected under most national laws, an industrial design must be new or original and non-functional. This means that an industrial design is primarily of an aesthetic nature, and any technical features of the article to which it is applied are not protected by the design registration. However, those features could be protected by a patent.

Industrial designs are what make an article attractive and appealing; hence, they add to the commercial value of a product and increase
its marketability. When an industrial design is protected, the owner – the person or entity that has registered the design – is assured an exclusive
right and protection against unauthorized copying or imitation of the design by third parties. This helps to ensure a fair return on investment. An effective
system of protection also benefits consumers and the public at large, by promoting fair competition and honest trade practices, encouraging creativity and promoting more aesthetically pleasing products. Protecting industrial designs helps to promote economic development by encouraging creativity in the industrial and manufacturing
sectors, as well as in traditional arts and crafts. Designs contribute to the expansion of commercial activity and the export of
national products. Industrial designs can be relatively simple and inexpensive to develop and protect. They are reasonably accessible to small and medium-sized enterprises as well as to individual artists and craftsmakers, in both developed and developing countries.

Generally, industrial design protection is limited to the country in which protection is granted. The Hague Agreement Concerning the International Registration
of Industrial Designs, a WIPO administered treaty, offers a procedure for international registration of designs. Applicants can file a single international
application either with WIPO or the national or regional office of a country party to the treaty. The design will then be protected in as many member countries of the
treaty as the applicant designates.

A geographical indication is a sign used on goods that have a specific geographical origin and possess qualities or a reputation due to that place of origin. Most commonly, a geographical indication consists of the name of the place of origin of the goods. Agricultural products typically have qualities that derive from their place of production and are influenced by specific local geographical factors, such as climate and soil. Whether a sign functions as a geographical indication is a matter of national law and consumer perception. Geographical indications may be used for a wide variety of agricultural products, such as, for example, “Tuscany” for olive oil produced in a specific area of Italy, or “Roquefort” for cheese produced in that region of France. The use of geographical indications is not limited to agricultural products. They may also highlight specific qualities of a product that are due to human factors found in the product’s place of origin, such as specific manufacturing skills and traditions. The place of origin may be a village or town, a region or a country. An example of the latter is “Switzerland” or “Swiss”, perceived as a geographical indication in many countries for products made in Switzerland and, in particular, for watches.

An appellation of origin is a special kind of geographical indication used on products that have a specific quality exclusively or essentially due to the
geographical environment in which the products are produced. The term geographical indication encompasses appellations of origin. Examples of appellations
of origin that are protected in states party to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration are
“Bordeaux” for wine produced in the Bordeaux region of France, “Prosciutto di Parma” – or Parma ham – for ham produced in the Parma province of Italy or “Habana” for tobacco grown in the Havana region of Cuba

Geographical indications are understood by consumers to denote the origin and quality of products. Many of them have acquired valuable reputations which, if not adequately protected, may be misrepresented by commercial operators. False use of geographical indications by unauthorized parties, for example “Darjeeling” for tea that was not grown in the tea gardens of Darjeeling, is detrimental to consumers and legitimate producers. The former are deceived into believing they are buying a genuine product with specific qualities and characteristics, and the latter are deprived of valuable business and suffer damage to the established reputation of their products.

A trademark is a sign used by a company to distinguish its goods and services from those produced by others. It gives its owner the right to prevent others from using the trademark. A geographical indication guarantees to consumers that a product was produced in a certain place and has certain characteristics that are due to that
place of production. It may be used by all producers who make products that share certain qualities in the place designated by a geographical indication.

If the name of a place is used to designate a particular type of product, rather than to indicate its place of origin, the term no longer functions as a geographical indication. For example, “Dijon mustard”, a kind of mustard that originated many years ago in the French town of Dijon, has, over time, come to denote mustard of that kind made in many places. Hence, “Dijon mustard” is now a generic indication and refers to a type of product, rather than a place.

Geographical indications are protected in accordance with national laws and under a wide range of concepts, such as laws against unfair competition, consumer protection laws, laws for the protection of certification marks or special laws for the protection of geographical indications or appellations of origin. In essence, unauthorized parties may not use geographical indications if such use is likely to mislead the public as to the true origin of the product. Applicable sanctions range from court injunctions preventing unauthorized use to the payment of damages and fines or, in serious cases, imprisonment.

WIPO administers a number of international agreements that deal partly or entirely with the protection of geographical indications (in particular, the Paris Convention and the Lisbon Agreement). WIPO meetings offer Member States and other interested parties the opportunity to explore new ways of enhancing the international protection of geographical indications

Copyright laws grant authors, artists, and other creators protection for their literary and artistic creations, generally referred to as “works”. A closely associated field is “related rights”, or rights related to copyright that encompass rights similar or identical to those of copyright, although sometimes more limited and of shorter duration. The beneficiaries of related rights are: (a) performers (such as actors and musicians) in their performances; (b) producers of phonograms (for example, compact discs) in their sound recordings; and (c) broadcasting organizations in their radio and television programs.
Works covered by copyright include, but are not limited to: novels, poems, plays, reference works, newspapers, advertisements, computer programs, databases, films, musical compositions, choreography, paintings, drawings, photographs, sculpture, architecture, maps, and technical drawings.

The creators of works protected by copyright, and their heirs and successors (generally referred to as “right holders”), have certain basic rights under copyright law. They hold the exclusive right to use or authorize others to use the work on agreed terms. The right holder(s) of a work can authorize or prohibit: its reproduction in all forms, including print form and sound recording; its public performance and communication to the public; its broadcasting; its translation into other languages; and its adaptation, such as from a novel to a screenplay for a film. Similar rights of, among others, fixation (recording) and reproduction are granted under related rights. Many types of works protected under the laws of copyright and related rights require mass distribution, communication and financial investment for their successful dissemination (for example, publications, sound recordings and films). Hence, creators often transfer these rights to companies better able to develop and market the works, in return for compensation in the form of payments and/or royalties (compensation based on a percentage of revenues generated by the work). The economic rights relating to copyright are of limited duration – as provided for in the relevant WIPO treaties – beginning with the creation and fixation of the work, and lasting for not less than 50 years after the creator’s death. National laws may establish longer terms of protection. This term of protection enables both creators and their heirs and successors to benefit financially for a reasonable period of time. Related rights enjoy shorter terms, normally 50 years after the performance, recording or broadcast has taken place. Copyright and the protection of performers also include moral rights, meaning the right to claim authorship of a work, and the right to oppose changes to the work that could harm the creator’s reputation. Rights provided for under copyright and related rights laws can be enforced by right holders through a variety of methods and fora, including civil action suits, administrative remedies and criminal prosecution. Injunctions, orders requiring destruction of infringing items, inspection orders, among others, are used to enforce these rights.

Copyright and related rights protection is an essential component in fostering human creativity and innovation. Giving authors, artists, and creators incentives in the form of recognition and fair economic reward increases their activity and output and can also enhance the results. By ensuring the existence and enforceability of rights, individuals and companies can more easily invest in the creation, development and global dissemination of their works. This, in turn, helps to increase access to and enhance the enjoyment of culture, knowledge, and entertainment the world over, and also stimulates economic and social development.

The field of copyright and related rights has expanded enormously during the last several decades with the spectacular progress of technological development that has, in turn, yielded new ways of disseminating creations by such forms of communication as satellite broadcasting, compact discs, and DVDs. Widespread dissemination of works via the Internet raises difficult questions concerning copyright and related rights in this global medium. World Intellectual Property Organization (WIPO) is fully involved in the ongoing international debate to shape new standards for copyright protection in cyberspace. In that regard, the organization administers the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT), known as the “Internet Treaties”. These treaties clarify international norms aimed at preventing unauthorized access to and use of creative works on the Internet.

Copyright and related rights protection is obtained automatically without the need for registration or other formalities. However, many countries provide for a national system of optional registration and deposit of works. These systems facilitate, for example, questions involving disputes over ownership or creation, financial transactions, sales, assignments, and transfer of rights. Many authors and performers do not have the ability or means to pursue the legal and administrative enforcement of their copyright and related rights, especially given the increasingly global use of literary, music, and performance rights. As a result, the establishment and enhancement of collective management organizations (CMOs), or “societies”, is a growing and necessary trend in many countries. These societies can provide their members with efficient administrative support and legal expertise in, for example, collecting, managing, and disbursing royalties gained from the national and international use of a work or performance. Certain rights of producers of sound recordings and broadcasting organizations are sometimes managed collectively as well.

Established in 1970, the World Intellectual Property Organization (WIPO) is an international organization dedicated to helping ensure that the rights of creators and owners of intellectual property are protected worldwide, and that inventors and authors are therefore recognized and rewarded for their ingenuity. This international protection acts as a spur to human creativity, pushing back the limits of science and technology and enriching the world of literature and the arts. By providing a stable environment for marketing products protected by intellectual property, it also oils the wheels of international trade. WIPO works closely with its Member States and other constituents to ensure the intellectual property system remains a supple and adaptable tool for prosperity and well-being, crafted to help realize the full potential of created works for present and future generations

As part of the United Nations system of specialized agencies, WIPO serves as a forum for its Member States to establish and harmonize rules and practices for the protection of intellectual property rights. WIPO also services global registration systems for trademarks, industrial designs and appellations of origin, and a global filing system for patents. These systems are under regular review by WIPO’s Member States and other stakeholders to determine how they can be improved to better serve the needs of users and potential users. Many industrialized nations have intellectual property protection systems that are centuries old. Among newer or developing countries, however, many are in the process of building up their patent, trademark and copyright legal frameworks and intellectual property systems. With the increasing globalization of trade and rapid changes in technological innovation, WIPO plays a key role in helping these systems to evolve through treaty negotiation; legal and technical assistance; and training in various forms, including in the area of enforcement. WIPO works with its Member States to make available information on intellectual property and outreach tools for a range of audiences – from the grassroots level through to the business sector and policymakers – to ensure its benefits are well recognized, properly understood and accessible to all.

Patents

A patent is an exclusive right granted for an invention – a product or process that provides a new way of doing something, or that offers a new technical solution to a problem. A patent provides patent owners with protection for their inventions. Protection is granted for a limited period, generally 20 years.

Patent protection means an invention cannot be commercially made, used, distributed or sold without the patent owner’s consent. Patent rights are usually enforced in courts that, in most systems, hold the authority to stop patent infringement. Conversely, a court can also declare a patent invalid upon a successful challenge by a third party

A patent owner has the right to decide who may – or may not – use the patented invention for the period during which it is protected. Patent owners may give permission to, or license, other parties to use their inventions on mutually agreed terms. Owners may also sell their invention rights to someone else, who then becomes the new owner of the patent. Once a patent expires, protection ends and the invention enters the public domain. This is also known as becoming off patent, meaning the owner no longer holds exclusive rights to the invention, and it becomes available for commercial exploitation by others.

The first step in securing a patent is to file a patent application. The application generally contains the title of the invention, as well as an indication of its technical field. It must include the background and a description of the invention, in clear language and enough detail that an individual with an average understanding of the field could use or reproduce the invention. Such descriptions are usually accompanied by visual materials – drawings, plans or diagrams – that describe the invention in greater detail. The application also contains various “claims”, that is, information to help determine the extent of protection to be granted by the patent.

Patents are granted by national patent offices or by regional offices that carry out examination work for a group of countries – for example, the European Patent Office (EPO) and the African Intellectual Property Organization (OAPI). Under such regional systems, an applicant requests protection for an invention in one or more countries, and each country decides whether to offer patent protection within its borders. The WIPO-administered Patent Cooperation Treaty (PCT) provides for the filing of a single international patent application that has the same effect as national applications filed in the designated countries. An applicant seeking protection may file one application and request protection in as many signatory states as needed.

Trademarks

It is our practice to perform a search of the Canadian Trademark Office’s database in order to ascertain the availability of your mark. In addition, it may be prudent to search unregistered trademarks such as trade names, which may have common-law rights. The cost of the search is often far less than the cost associated with changing the mark later if it is determined that there is a prior user. After determining that the goods and/or services you intend to provide in association with the proposed mark, we will perform the search, analyze the results and report to you.

If the search does not reveal any marks that may have an effect on the registration of your mark, the next step is to file a trademark application. This stage involves the preparation of the application based on a consideration of the goods and services to be used in association of the mark. The application is submitted to the Trademarks Office along with the appropriate government filing fee.

Once a trademark application is filed it must be reviewed by a Trademark Office Examiner who typically issues one or more Office Actions (objections) to which we must respond. In Canada a first Office Action is typically issued 6 to 8 months after the initial filing date.

If and when the Examiner’s objections are dealt with, the application will be advertised in the Trademarks Journal, a weekly publication issued by the Trademarks Office listing new trademark applications. This allows any member of the public an opportunity to oppose or object to the application. In Canada the opposition period is two months from the date of publication.

After advertisement without objections, a Notice of Allowance will be issued. The applicant will be required to submit the registration fee and, if the mark is based on prior, a Declaration of Use.

Following satisfaction of the requirements for registration, including payment of the registration fee, the application becomes a “registered trademark” and is so recorded in the Trademark Office database. A trademark can be registered indefinitely, provided there is continued use of the mark, however, the registration must be renewed every fifteen years.

A trademark is a word or design used by a business to distinguish its goods or services from those of competitors.
There are two types of trademarks. Word marks are words, letters, numbers or combinations of them. Design marks are words written in a special style such as the Coca-Cola design, pure designs without words such as the Mercedes-Benz star, or a combination of words and designs.

The first step is to choose a suitable word or design to identify the goods or services. Trademark rights to the word or design are acquired by applying to register the trademark or by commencing use of the trademark. Unlike corporate names, it is not possible to reserve a trademark. There is always some risk that someone else will claim prior rights to a trademark after an application is filed or after use has started.

The Trademarks Office will not register a trademark which is confusing with a registered trademark or with a trademark in another application having priority. The application with the earliest date, either the filing date or the date of first use, has priority. Use of a trademark confusing with a registered mark may make the user liable for damages if legal action is taken for trademark infringement.
In addition, if registration of a trademark is desired, it must not be clearly descriptive of the goods or services it identifies. An example of a clearly descriptive mark is SUPERWASH to identify woolen goods. On the other hand, trademarks may be registered if they are merely suggestive of the goods and services. An example is WATER WOOL for woolen goods. The assistance of an experienced trademark agent is usually needed to decide whether a mark is clearly descriptive or not.
A trademark normally cannot be registered if it is nothing more than a surname. An example is JONES to identify wine. However ELDERS may be registered for wine because, while it is a surname, it has another meaning.
Clearly descriptive trademarks or surnames may be registered after a period of extensive use. An example is the trademark MCDONALDS.
There are other marks which cannot be registered, such as the name of the goods or services in any language, various flags, coats of arms and marks confusing with marks adopted by public authorities. A trademark agent should therefore be consulted before deciding on a mark.

The strength of a trademark is related to a factor called “distinctiveness”. A trademark is not very distinctive, and is therefore a weak one, if it is descriptive of the goods or services, a surname, initials or constitutes words commonly used in conjunction with the goods or services. Adopting unconventional spelling of words usually doesn’t help. Such marks make little impact on the mind of the consumer and therefore do not adequately direct him or her to goods or services of one person rather than competitors. However, such marks can become distinctive, and therefore valuable, by extensive use and advertising.
The most distinctive type of trademark is an arbitrary word without meaning such as KODAK. Such trademarks become strongest after extensive usage. Use of such marks by others on any goods or services likely would be trademark infringement.
However, many trademark owners do not like arbitrary or meaningless words because they initially create no favourable impression in the mind of the consumer. This may be very important from a marketing point of view, at least until a mark becomes well known. For this reason, the best compromise is usually a trademark which suggests some favourable characteristic of the product or service but does not clearly describe it.

The best way to try to avoid conflicts with earlier trademarks is to have a trademark search done. An experienced registered trademark agent can offer preliminary advice before doing the search. It may be advisable to have a few alternative trademarks ready.
After the search is done, the agent gives an opinion as to whether or not the trademark appears to be available for registration. It may take considerable experience to decide whether a trademark is confusing with one found in the search, particularly if the marks are similar and their goods or services are also similar. Search results are not completely reliable though. There is some risk that conflicts with other marks will be found later.
To start a search, the agent needs to know the trademark itself and the goods and/or services the mark identifies or will identify.

An application is filed by the Trademark Agent with the Canadian Trademarks Office. There are no provincial trademark registrations in Canada. People sometimes speak of registering their name in Victoria. This refers to trade names or business names and not to trademarks. Registration in Victoria confers no right to use the name as a trademark. Federal trademark laws take priority.
After the application is filed, the Trademarks Office sends a filing notice which merely acknowledges receipt of the application and gives a filing date and an application number.
A few months later, the application is reviewed by an Examiner at the Trademarks Office who conducts another search to see if there other confusing marks. If a confusing trademark is not found, and there are no other objections, such as descriptiveness or that the mark is a surname, then the trademark is approved for advertisement in the Trademarks Journal. If objections are made, then the Examiner sends an Examiner’s Report listing objections to registration. A period of time, usually six months, is given to respond. Often an experienced trademark agent can overcome objections by presenting arguments in favour of registration of the trademark.
The Trademarks Journal is published by the Trademarks Office and lists trademarks which the Office proposes registering. Other parties then have the opportunity to oppose the registration of the published marks, usually on the grounds of prior use or registration of a similar trademark.
If an opposition is filed, which occurs in only a small percentage of cases, the matter is decided by opposition proceedings. These are generally similar to a trial but are conducted mainly by written submissions and are much less expensive.
If no opposition is filed, then the trademark application is allowed. If the trademark was already in use at the time the application was filed, then the only remaining step is paying the registration fee. If the trademark was not in use at the time the application was filed, then it is also necessary to file a declaration stating that use of the trademark has started.

An application may be filed either before or after use of a trademark starts. An application takes a minimum of one year to be approved and so trademark owners should file applications for proposed trademarks, or a few alternatives, a year or more before they plan on using the marks. Often such advanced planning is not possible, and the trademark owner then may have to change the mark if problems develop, particularly conflicts with other trademarks.

A trademark is used on goods when the mark appears on the goods, or packaging or labeling for the goods, and the goods are sold in the normal course of trade. A trademark is not used on goods when it appears in advertisements for the goods or if the sale of the goods is an isolated one or if they are distributed free.
A trademark is used on services, for example restaurants, retail stores, construction contractors or musical bands, when the mark appears in advertisements or promotional material for the services and such services are actually available at that time.

Generally a separate trademark application is required in each country where protection is desired.
Canadian trademark owners should seriously consider registration of their trademarks in the United States. Otherwise, later expansion into the United States may be prohibited, or a change of trademark required, if the mark is later found to be unavailable there.
If registration in the United States is essential or desirable, then it may be advisable to do a U.S. trademark search before a Canadian search. It is generally more difficult to find an available trademark in the United States.
If the trademark appears to be available in the United States and Canada, then a Canadian application should be filed first. The United States application may be filed up to six months after the Canadian application and will get the filing date of the Canadian application. No use of the trademark in the United States is required to obtain registration if this procedure is followed.
Applications in other foreign countries should also be filed within six months of filing the Canadian application. They also get the filing date of the Canadian application under the International Convention.

Your mark, or setup of your business including your name, logos, and colours, are the heart of your business and may become very valuable and desirable over time. Protecting your rights against competing businesses is important. Although your business has rights to its mark through the workings of common-law trademarks in the geographical area where it is made known, it is not protected elsewhere. Only registration of your mark as a Canadian trademark protects it against use by others absolutely.

A trademark is a distinctive sign that identifies certain goods or services produced or provided by an individual or a company. Its origin dates back to ancient times when craftsmen reproduced their signatures, or “marks”, on their artistic works or products of a functional or practical nature. Over the years, these marks have evolved into today’s system of trademark registration and protection. The system helps consumers to identify and purchase a product or service based on whether its specific characteristics and quality – as indicated by its unique trademark – meet their needs.

Trademark protection ensures that the owners of marks have the exclusive right to use them to identify goods or services, or to authorize others to use them in return for payment. The period of protection varies, but a trademark can be renewed indefinitely upon payment of the corresponding fees. Trademark protection is legally enforced by courts that, in most systems, have the authority to stop trademark infringement. In a larger sense, trademarks promote initiative and enterprise worldwide by rewarding their owners with recognition and financial profit. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services. The system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating international trade.

Trademarks may be one or a combination of words, letters and numerals. They may consist of drawings, symbols or three dimensional signs, such as the shape and packaging of goods. In some countries, non-traditional marks may be registered for distinguishing features such as holograms, motion, color and non-visible signs (sound, smell or taste). In addition to identifying the commercial source of goods or services, several other trademark categories also exist. Collective marks are owned by an association whose members use them to indicate products with a certain level of quality and who agree to adhere to specific requirements set by the association. Such associations might represent, for example, accountants, engineers or architects. Certification marks are given for compliance with defined standards but are not confined to any membership.They may be granted to anyone who can certify that their products meet certain established standards. Some examples of recognized certification are the internationally accepted “ISO 9000” quality standards and Ecolabels for products with reduced environmental impact

First, an application for registration of a trademark must be filed with the appropriate national or regional trademark office. The application must contain a clear reproduction of the sign filed for registration, including any colors, forms or three-dimensional features. It must also contain a list of the goods or services to which the sign would apply. The sign must fulfill certain conditions in order to be protected as a trademark or other type of mark. It must be distinctive, so that consumers can distinguish it from trademarks identifying other products, as well as identify a particular product with it. It must neither mislead nor deceive customers nor violate public order or morality. Finally, the rights applied for cannot be the same as, or similar to, rights already granted to another trademark owner. This may be determined through search and examination by national offices, or by the opposition of third parties who claim to have similar or identical rights.

Almost all countries in the world register and protect trademarks. Each national or regional office maintains a Register of Trademarks containing full application information on all registrations and renewals, which facilitates examination, search and potential opposition by third parties. The effects of the registration are, however, limited to the country (or, in the case of regional registration, countries) concerned. To avoid the need to register separate applications with each national or regional office, WIPO administers an international registration system for trademarks. The system is governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol. Persons with a link (be it through nationality, domicile or establishment) to a country party to one or both of these treaties may, on the basis of a registration or application with the trademark office of that country (or related region), obtain an international registration having effect in some or all of the other countries of the Madrid Union.

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